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What level of expertise can a patent owner expect from the courts?
The panel of legal judges deciding the matter will – in practice – have no technical background. The judges will be assisted in technical matters by a Market Court engineer and the court may also appoint an external independent expert to assist with relevant technical issues.
Are cases decided by one judge, a panel of judges or a jury?
The standard procedure is for patent cases to be handled in the preliminary stage by one judge and in the main hearing stage by a panel of three judges. A Market Court engineer may be appointed by the court to participate in the proceedings by advising the panel of judges on technical issues.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
Jury trials are not available.
What role can and do expert witnesses play in proceedings?
Expert witnesses have an important role in proceedings as, in practice, they are usually appointed by one of the parties. In addition, the expert witness will usually draft a written opinion – which will be filed as evidence before the main hearing – and will often be heard in the main hearing as well. According to new procedural rules, an expert will not technically be heard as a witness, but rather as an expert appointed by a party and accepted by the court to act as a qualified expert in the relevant technological field. The parties may also appoint regular witnesses who have personal experience in the matter (eg, by having personally witnessed a relevant event).
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
As a member of the European Patent Convention, Finland applies the doctrine of equivalents. The courts also regularly refer to Article 69 of the European Patent Convention and its Interpretation Protocol. Certain local application principles have also been implemented, which are similar to those of other Nordic countries.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
An injunction can be applied for from the Market Court before or after the actual infringement action is filed. In urgent situations, an injunction can also be applied for and granted ex parte without hearing the defendant. The general pre-conditions for an injunction are:
- the probable right of the patent owner against the defendant;
- the danger of undue detriment caused to the patent owner; and
The plaintiff must establish the alleged likelihood of the patent infringement by providing some evidence on the infringement. For the comparison of interests, the plaintiff must present calculations concerning the damages that would occur if an injunction was not granted.
How are issues around infringement and validity treated in your jurisdiction?
Both infringement and validity issues are decided by the Market Court as it has exclusive jurisdiction in patent litigation matters. A mere invalidity defence will not be accepted as a response to an infringement action – instead, a separate invalidity action must be filed. If possible, the Market Court will hear both actions in the same sitting.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
While parties have traditionally filed decisions of other jurisdictions as evidence to support their arguments, the courts have not considered such decisions to have considerable influence. However, if the case concerns a European patent that was validated in Finland, European Patent Office decisions concerning the patent would likely be considered carefully. However, the Market Court is not legally bound by European Patent Office decisions in such situations.
Damages and remedies
Can the successful party obtain costs from the losing party?
Yes – by law, the losing party must bear the reasonable and necessary costs of the winning party. After the main hearing, the parties will be able to comment on the other party’s itemised cost calculations. The court will award legal costs in relation to the decision given on the merits of the case. It is not unusual for the court to rule that only some of the claimed costs be borne by the losing party.
What are the typical remedies granted to a successful plaintiff?
Typical remedies include a prohibition on continuing the infringing action and damages.
How are damages awards calculated? Are punitive damages available?
- reasonable compensation for the exploitation of the invention; and
- other damages caused to the patent owner.
Reasonable compensation is traditionally calculated as a royalty percentage, while ‘other damages’ mainly include the patent owner’s lost profits. To establish other damages, the plaintiff must present evidence. Reasonable compensation (ie, a royalty) is always available – even if the defendant has not acted negligently. In the case of slight negligence, compensation may be adjusted accordingly. Compensation proceedings for patent infringement will take into account damage that occurred only in the five years before the institution of the proceedings. Punitive damages are not available.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
The court always prohibits the continuation of an infringement if the plaintiff requests it. A permanent injunction will be granted without any pre-conditions if the court holds that the infringement exists.
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
The Market Court will attempt to handle proceedings within 12 to 14 months. Expediting the process is possible to some extent if both parties pursue this.
How much should a litigant plan to pay to take a case through to a first-instance decision?
Costs vary extensively depending on such factors as the technological field and the number of experts and witnesses to be heard. Translation issues may increase costs significantly as legal briefs can be filed only in Finnish or Swedish. A rough estimate of the plaintiff’s costs is between €100,000 and €200,000.
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